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Quick Question Thursday, China Law Answers, Part XXII
Because of this blog, our China lawyers get a fairly steady stream of China law questions from readers, mostly via emails but occasionally via blog comments or phone calls as well. If we were to conduct research on all the questions we get asked and then comprehensively answer them, we would become overwhelmed. So what we usually do is provide a super fast general answer and, when it is easy to do so, a link or two to a blog post that provides some additional guidance. We figure we might as well post some of these on here as well. On Fridays, like today.
Just one question this week and it came in about ten minutes ago. But it is a really good one. It is from a friend of mine who teaches business at a University in Shanghai, and it is the following:
Greetings from Shanghai!
You wrote in a recent blog post,” one lesson should be clear from this: if your brand is at all famous and you have the means, strongly consider the Starbucks approach and register your brand in all 45 classes”
My question is – how does Starbucks avoid getting some (or most) of these 45 registrations cancelled after 3 years because of non-use?My students here in Shanghai often ask me this question.
Thank you for your insight.
Our China trademark lawyer, Matthew Dresden gave this answer:
1. It is true that three years after the registration date, Starbucks’ trademarks could be challenged for non-use (for those goods and services that they are not actually using in commerce). But in China, trademark owners do not have to affirmatively prove use, so these marks will remain valid (and can be renewed after 10 years) unless and until someone files a non-use cancellation against them.
2. Moreover, if Starbucks wants to foreclose the possibility that a third party would cancel these trademarks for non-use, at about the three-year mark they could file new trademark applications in the at-risk classes. Once those applications proceed to registration (and they inevitably would), they would have a new three-year window during which the marks could not be challenged.
3. Note that the above two steps would apply to any company. If we’re talking about Starbucks in particular, they have established that they are a well-known brand and could also fight trademark squatters that way. But that’s a defensive action, and Starbucks has made the tactical decision that it is better to play offense than defense.
For more on China trademarks, check out the following, all of which were written within the last month:
- China Trademarks: Facebook FTW
- China Trademarks and My Favorite (Uncle) Martian
- China’s Trademark Laws vs. the Biggest Company in the World, or Apple’s Cruelest Month
- China Trademark Registration: Keep it Real
The post Quick Question Thursday, China Law Answers, Part XXII appeared first on China Law Blog.
We will be discussing the practical aspects of Chinese law and how it impacts business there. We will be telling you what works and what does not and what you as a businessperson can do to use the law to your advantage. Our aim is to assist businesses already in China or planning to go into China, not to break new ground in legal theory or policy.
Source: http://www.chinalawblog.com/2016/05/quick-question-friday-china-law-answers-part-xxii.html
